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Significant changes mean clients should be
proactive to mitigate risk

For many years, Canada has been something of an outsider on the global stage when it came to applying for and securing trademarks. Well, that’s about to change in a big way as the federal government rolls out its new Trademark Act which will include the adoption of the Madrid Protocol, the Singapore Treaty and the Nice Classification System, among other updates.

Even though the new legislation isn’t set to go into effect until 2019, companies shouldn’t wait until the last minute to prepare themselves. And while some changes may be welcome, others are already ruffling feathers.

Stephanie Vaccari, Partner

“Now, if you apply for a trademark then you have to use it in Canada or in another country before you get a trademark registration. If you don’t use it, you don’t get it. But under this new legislation, anybody can get a trademark without using it in Canada,” said Stephanie Vaccari, partner in Baker McKenzie’s Intellectual Property Group and head of our Toronto office’s Luxury and Fashion Group.

“A number of Canadian clients are concerned that we’re going to have these third party trolls coming in and registering our clients’ marks for something completely different without ever having to use the mark, under this new regime.”

Stephanie and Partner Christopher Aide — head of our Toronto IP Group — have been visiting clients to detail the new rules and advise them on what they should be doing in preparation.

“We’re telling clients that in order to try and prevent third parties from applying for their marks, they should apply for their key brands now with a laundry list of goods and services because their application timeline will probably coincide with the new legislation coming into effect and so they won’t be required to use them all right away,” Stephanie said.

“You have three years to use the registration with those goods and services. If you don’t, it could be vulnerable for cancellation but at least it’ll prevent any issues for those first three years. Personally I don’t think the trolling is going to be significant but it is something that may happen and this is a way for our clients to try and mitigate that risk.”

Another reason to file applications now is that owners can still do so under a single fee, whereas the new system will charge multiple application fees for some goods and services based on their Nice classification.

Stephanie and her group are working hard to classify and re-classify clients’ marks now according to the new standards so that they aren’t faced with a backlog of improperly registered marks when the new rules take hold.

One major benefit of the new Act is that it will make it easier for our global clients to extend their trademarks into the Canadian market under the Madrid Protocol, rather than having to follow a separate procedure just for Canada. This goes for Canadian companies as well, making it easier for them to extend their marks overseas. And with Baker McKenzie’s global IP expertise, we’re well suited to handle any “new” issues in Canada as we’ve likely already handled them before in other jurisdictions.

The renewal timeline for trademarks in Canada will also fall from every 15 years to every 10 years, in line with the global standard.

“We’re basically just aligning with the rest of the world. There are countries all over Europe where you don’t have to use the registered trademark and they’re okay with that, and a number of our key clients are okay with it as well,” Stephanie said.

“So on a global scale we won’t be as much of an anomaly as a country. For our global clients, it will be easier because Canada will be similar to other countries they do business in but Canadian companies are finding this significant, and it is because it’s going to cost them more money to search a mark and it might cost more to prevent third party interference. It could end up increasing rather than decreasing their costs so we’re working with them now to be proactive and put themselves in the best possible position for these changes.”